Interference No. 105
Bourbeau, on the other hand, urges that the plain meaning of claim I requires that
the cable retaining elements requires that each of the pair of cable retaining members be
supported for movement away from each other and toward each other (Bourbeau
Opposition 1, Paper 35, page 7, lines 14-16)
Tarpill responds that Bourbeau has improperly added limitations to its
interpretation of the claim, in that it does not require "each" or "both" cable retaining
members to be supported for movement "with respect to the tool holder" (Tarpill Reply
1, Paper 41, page 6, lines 4-11).
11. Analysis of Anticipation by Nilsson
Claims being considered for patentability issues before the PTO are construed
according to their broadest reasonable interpretation consistent with the specification. In
re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983); see also In re Zletz,
893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Pearso , 494 F.2d
1399, 1404,181 USPQ 641, 645 (CCPA 1974); In re Prate , 415 F.2d 1393, 1404,162
USPQ 541, 550 (CCPA 1969).
We start with the language of the claim itself, as it is the claims that measure the
invention. Bell Communications Research, Inc. v. Vitalink Communications Colp., 55
F.3d 615, 619-20, 34 USPQ2d 1816, 1819 (Fed. Cir. 1995). First, although not raised by
the parties, we note that claim 4, dependent from claim 1, recites that the cable retaining
members are pivotally supported on the tool holder. (Bourbeau Claim 4, column 6, lines
23-25). Under the doctrine of claim differentiation, claim I therefore encompasses more
than the preferred embodiment disclosed in Figure 8 and claimed in claim 4, i.e. the
pivotable embodiment.
6
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